Ate My Heart, Inc. v. GA GA Jeans Limited

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

This Decision is a P.O. Box 1451

Precedent of the TTAB Alexandria, VA 22313-1451

Mailed: July 22, 2014

Opposition No. 91205110

Ate My Heart, Inc.

v.

GA GA Jeans Limited

Cheryl S. Goodman, Interlocutory Attorney:

Opposer noticed the discovery deposition of Applicant’s expert Rhonda Harper

(hereinafter “Ms. Harper”) without a subpoena. Thereafter, Applicant filed a motion

to quash and for protective relief to preclude the deposition, in large part on the

basis that Ms. Harper is not a testifying rebuttal expert witness. These filings were

preceded by various other filings and actions stemming from Opposer’s disclosure,

during discovery, of its own plans to present expert testimony.1

As background, on April 15, 2013, Opposer provided notification to the Board of

its expert disclosures. At the time of this notification, discovery was set to close on

May 15, 2013. On May 20, 2013, the Board suspended proceedings nunc pro tunc to

the date of Opposer’s notification of expert disclosures, for purposes of allowing

expert discovery, which effectively resulted in a reopening of the discovery period

1 The standard Board schedule for its trial cases calls for parties to disclose plans to use

expert testimony 30 days prior to the close of discovery. See Fed. R. Civ. P. 26(a)(2);

Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 72 Fed. Reg. 42242,

42244-46 (August 1, 2007).

Opposition No. 91205110

solely for purposes of each party taking discovery “limited to planned expert

testimony, including that of any rebuttal expert.”2 That Board order also allowed

Applicant an additional 30 days to disclose any plans to use an expert to rebut

Opposer’s expert. However, nothing more was filed with the Board until August 30,

2013, when Applicant sought a one week “extension” of the expired deadline. The

passage of time between the Board’s May 20, 2013 order and Applicant’s August 30,

2013 filing is addressed, in part, in a September 10, 2013 motion by Applicant “for

leave to file expert testimony.”3

On September 30, 2013, Applicant, referencing Fed. R. Civ. P. 26(a)(2), and

Trademark Rule 2.120(a)(2), filed “Applicant’s Notice of Expert Witness Disclosure

for Rebuttal” with the Board, identifying Rhonda Harper M.B.A, as a testifying

rebuttal expert witness. On November 27, 2013, the Board ordered proceedings to

remain suspended for completion of expert discovery,4 and on December 2, 2013,

2 When the Board suspended proceedings for expert discovery, it was based on the

assumption that the parties were ready to proceed with expert discovery and that they had

already served the written expert reports concurrently with their expert disclosures since

normally, under Fed. R. Civ. P. 26(a)(2)(B), parties serve written disclosures accompanied

by the expert report. However, in this case, the parties stipulated to a deadline of August

15, 2013 for affirmative expert reports and September 16, 2013 for rebuttal expert reports,

as Applicant stated to Opposer that such deadlines would provide it with “sufficient time to

provide reports from expert witnesses.” While Opposer found “the suggested time frame

excessive,” it agreed to the dates “in the interest of acting in good faith and giving you full

opportunity to provide your affirmative expert report….” Fed. R. Civ. P. 26(a)(2)(B) and

26(a)(2)(D) provide that parties may stipulate to deadlines for disclosure of experts and

submission of written expert reports.

3 In this motion, Applicant’s references to Trademark Rule 401.03, which does not exist, are

taken as references to Section 401.03 of the TBMP, the Board’s manual of procedure.

4 The Board’s order of November 27, 2013, denied Applicant’s August 30, 2013 motion to

extend time to serve its expert disclosures and expert report on a date after the parties’

stipulated deadline. As a result, Applicant’s expert disclosure to Opposer on September 30,

2013 was untimely. However, in that November 27 order, the Board found the late expert

disclosure harmless (and therefore not excluded) under Fed. R. Civ. P. 37(c)(1) because

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Opposition No. 91205110

Opposer noticed the deposition without subpoena of Ms. Harper for December 17,

2013. Thereafter, Applicant filed, on December 10, 2013, its motion to quash and

for protective relief to preclude the deposition of Ms. Harper.5

Applicant’s exhibit B, a letter to Opposer’s counsel dated October 23, 2013,

attached to its motion to quash states:

Applicant specifically enlisted the services of Ms. Rhonda Harper for

the limited purpose of preparing an expert rebuttal analysis of the

survey conducted by Opposer. At no point in time did Applicant ever

indicate that it would call Ms. Harper to testify, nor does Applicant

have any present intention of so doing. The purpose of Ms. Harper’s

retention was to aid Applicant in its preparation for trial; a task which

Ms. Harper long since completed.

Indeed the Federal Rules of Civil Procedure do not, absent

extraordinary circumstances, allow for the deposition of experts who

are used in the preparation for litigation, but whom [sic] are not

expected to be witnesses themselves. See generally, Fed. Rule Civ.

Proc. 26(b)(4)(D)(ii). Accordingly, since Ms. Harper is not a testifying

expert, Opposer has no legal basis for the issuance of its deposition

notice.

On December 16, 2013, the Board issued an order requiring Applicant to

indicate whether it had provided Ms. Harper’s expert rebuttal report to Opposer

and whether it was redesignating Ms. Harper as a non-testifying expert.

Opposer would have an opportunity to conduct discovery of the late disclosed expert and

expert report. The November 27 order also found Applicant’s September 30, 2013

disclosure of its rebuttal expert witness and rebuttal expert witness report timely based on

the parties’ stipulated extension.

5 If a subpoena had accompanied the notice of deposition of Ms. Harper, then a motion to

quash would be filed in the district court for which the subpoena issued, not with the Board.

The Board has no jurisdiction over depositions of non-parties by subpoena and, thus, has no

authority to quash such depositions. HighBeam Marketing LLC v. Highbeam Research

LLC, 85 USPQ2d 1902, 1906 (TTAB 2008); Luehrmann v. Kwik Kopy Corp., 2 USPQ2d

1303, 1304 n.3 (TTAB 1987).

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Opposition No. 91205110

On December 19, 2013, Applicant responded to the Board’s order.6 Applicant

stated that on September 30, 2013, it provided to Opposer a copy of Ms. Harper’s

rebuttal expert report and it “did not intend for Mr. [sic] Harper to appear at any

subsequent hearings or to provide any direct testimony as her engagement was

strictly limited to the preparation of the expert rebuttal report.”

On December 23, 2013, Opposer filed a response in opposition to the motion for

protective order and to quash.

Motion to Quash is Moot

The portion of Applicant’s motion seeking to quash the notice of deposition on

December 17, 2013 is moot because the time has passed for taking the noticed

deposition on that date and the deposition did not occur. Further, Opposer has

chosen to subpoena Ms. Harper for a future discovery deposition.7 Whether

Opposer is entitled to take the deposition of Ms. Harper at a later date will now be

considered in connection with Applicant’s motion for protective relief.

6 This filing fails to follow the Board’s form and format requirements as it is a letter, is

single spaced, and lacks the proper heading for papers filed with the Board. Trademark

Rule 2.126; TBMP Sections 106.01 and 106.03 (2014). Any further correspondence from

Applicant should adhere to Board format requirements.

In addition, the filing fails to indicate service on Opposer as required by Trademark Rule

2.119(a). Applicant is reminded that all papers it files with the Board must be served on

Opposer’s counsel, and be accompanied by prima facie evidence of service in the form of a

certificate of service. Nonetheless, the Board finds no prejudice to Opposer can result from

the Board’s consideration of Applicant’s response to the Board’s order, in view of Opposer’s

December 23, 2013 response which indicates its awareness of Applicant’s December 19,

2013 filing.

7 Opposer advised that it has contacted Ms. Harper directly, notifying her that the

deposition notice was stayed pending the Board’s decision on the motion to quash. As the

record reflects, Ms. Harper indicated that should the Board deny the motion to quash, she

would agree to voluntarily submit to deposition by subpoena, and Opposer indicates that it

will compensate Ms. Harper for her time.

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Opposition No. 91205110

Motion for Protective Order

A. Good Faith Attempt to Confer

The Board finds that the parties made a good faith attempt to confer to resolve

the dispute prior to Applicant’s filing of the motion for protective relief. Fed. R. Civ.

P. 26(c)(1); TBMP Section 412.06 (2014).

B. Is Ms. Harper shielded from Expert Discovery?

We now turn to consideration of the merits of Applicant’s motion for protective

relief.

While Applicant argues that Opposer is not entitled to take the discovery

deposition of Ms. Harper, Opposer submits that, in view of Applicant’s identification

of Ms. Harper under Fed. R. Civ. P. 26(a)(2) as a trial expert, it “is entitled to cross-

examine Ms. Harper on both her rebuttal expert report and the raw data that

appears to be an affirmative expert report….” Opposer further argues that “[i]f the

Board determines that Ms. Harper should be re-designated as a non-testifying

witness, then Applicant should be precluded from relying upon her declaration and

any raw data” at trial.8

Applicant's motion presents the Board with the question of whether a witness,

who was identified as a testifying expert and who produced an expert report, can be

8 Expert witness reports either signed, or in the form of declarations (as testimony), are not

admissible as evidence by the proponent at trial absent stipulation of the parties.

Trademark Rule 2.123(b) and TBMP Section 703.01(b) (2014). The opinions set out in

expert reports may ultimately be presented at trial in an admissible form by calling the

experts to testify as to the opinions rendered in the reports. Trademark Rule 2.123(a);

TBMP Section 703.01(a).

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Opposition No. 91205110

redesignated as a non-testifying or consulting expert and thereby be shielded from

discovery.9

1. Is Ms. Harper a testifying or a non-testifying expert?

The distinction between testifying and non-testifying experts is significant. Fed.

R. Civ. P. 26(b)(4)(A) provides: “A party may depose any person who has been

identified as an expert whose opinions may be presented at trial. If Rule 26(a)(2)(B)

requires a report from the expert, the deposition may be conducted only after the

report is provided.” (emphasis added). A testifying expert under Fed. R. Civ. P.

26(b)(4)(A) may be deposed regarding the information provided in the expert report,

including the facts and data considered by the witness in forming the opinions

offered and the assumptions relied upon in forming the opinions to be expressed.

Fed. R. Civ. P. 26(b)(4) Advisory committee notes (2010 amendment); Fed. R. Civ. P.

26(b)(4) Advisory committee notes (1993 amendment). Rule 26(b)(4)(A) is designed

to allow the opposing party an opportunity to adequately prepare for cross-

examination at trial and applies to experts who will be called as witnesses at trial.

Fed. R. Civ. P. 26(b)(4) Advisory committee notes (1970 amendment). See also

Mantolete v. Bolger, 96 F.R.D. 179, 181 (1982) (Pretrial exchange of discovery

regarding experts to be used as witnesses under Fed. R. Civ. P. 26(b)(4) aids in

“narrowing the issues, preparation of cross examination and the elimination of

surprise at trial”).

9 Courts generally find that prior to submission of an expert report or testimony of the

expert by deposition, an expert designation may be withdrawn. See e.g., Ross v. Burlington

Northern R. Co., 136 F.R.D. 638, 639 (N.D.Ill. 1991) (denying motion to take deposition of

redesignated expert witness where no testimony had been taken or opinions disclosed).

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Opposition No. 91205110

By contrast, Fed. R. Civ. P. 26(b)(4)(D) provides that “[o]rdinarily, a party may

not, by interrogatories or deposition, discover facts known or opinions held by an

expert who has been retained or specially employed by another party in anticipation

of litigation or to prepare for trial and who is not expected to be called as a witness

at trial.” Under Fed. R. Civ. P. 26(b)(4)(D), there is no need for a comparable

exchange of information regarding non-witness experts who act as consultants and

advisors to counsel regarding the course the litigation should take. Rule 26(b)(4)(D)

is designed to promote fairness by preventing access to another party's diligent trial

preparation. Fed. R. Civ. P. 26(b)(4), Advisory committee notes (1970 amendment).

The policy considerations underlying Fed. R. Civ. P. 26(b)(4)(D) include “(1)

encouraging counsel to obtain necessary expert advice without fear that the

adversary may obtain such information; (2) preventing unfairness that would result

from allowing an opposing party to reap the benefits from another party's efforts

and expense; (3) preventing a chilling effect on experts serving as consultants if

their testimony could be compelled; and (4) preventing prejudice to the retaining

party if the opposing party were allowed to call at trial an expert who provided an

unfavorable opinion to the party who first retained them.” Plymovent Corp. v. Air

Technology Solutions, Inc., 243 F.R.D. 139, 143 (D.N.J. 2007).

Although Applicant may have originally designated Ms. Harper as a testifying

expert, Applicant has the prerogative of deciding not to use the expert for

testimony. The Board finds that, based on Applicant’s counsel’s statements in its

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Opposition No. 91205110

October 23, 2013 letter to Opposer and its December 19, 2013 submission to the

Board, Applicant has redesignated Ms. Harper as a non-testifying expert witness.

2. In view of Applicant’s disclosure of Ms. Harper’s opinions to

Opposer, is she subject to discovery, even though redesignated as a non-

testifying or consulting expert?

Courts have taken two different approaches with regard to whether discovery

may be allowed for a testifying expert who has been redesignated by a party as a

non-testifying or consulting expert after the expert’s opinion has been disclosed.

One line of decisions holds that a testifying expert can be wholly converted to a

consulting expert, and discovery from the expert can be prohibited by simply

withdrawing the expert's designation. These courts have held that access to the

expert then is governed by the “exceptional circumstances” test under Rule

26(b)(4)(D)(ii), even where an expert's reports and/or opinions, or portions thereof,

were disclosed prior to his/her redesignation as a non-testifying expert.10 See e.g.,

FMC Corp. v. Vendo Co., 196 F.Supp.2d 1023 (E.D.Cal. 2002) (party may prohibit

discovery from a consulting expert under Rule 26(b)(4) after the expert's designation

as a testifying expert has been withdrawn, even where expert witness report

produced). This approach is grounded in the policies underlying the distinction

between testifying experts and consulting experts.

10 Rule 26(b)(4)(D)(ii) permits discovery from specially retained, non-trial experts only upon

a showing of “exceptional circumstances under which it is impracticable for the party

seeking discovery to obtain facts or opinions on the same subject by other means.” Such

circumstances “may exist where 1) the object or condition at issue is destroyed or has

deteriorated after the non-testifying expert observes it but before the moving party's expert

has an opportunity to observe it; or 2) there are no other available experts in the same field

or subject area.” Spearman Ind. v. St. Paul Fire & Marine Ins. Co., 128 F.Supp.2d 1148,

1151 (N.D.Ill. 2001).

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Opposition No. 91205110

The other line of cases holds that even if the expert designation is subsequently

withdrawn, the submission of an expert report takes the expert out of the

exceptional circumstances category of Rule 26(b)(4)(D)(ii) as the expert opinions are

now known. See e.g., SEC v. Koenig, 557 F.3d 736, 744 (7th Cir. 2009) (“A witness

identified as a testimonial expert is available to either side; such a person can't be

transformed after the report has been disclosed ... to the status of a trial-

preparation expert whose identity and views may be concealed.”). These courts

apply a balancing test that mirrors Fed. R. Evid. 403 in considering whether to

allow a redesignated expert to be deposed.11 See R.C. Olmstead, Inc. v. CU

Interface, LLC, 657 F.Supp.2d 899, 904 (N.D.Ohio 2009) (discussing balancing test

that mirrors Federal Rule of Evidence 403 in connection with the taking of

depositions of a redesignated non-testifying expert).12

Of the two approaches, the Board finds that the better approach is to allow the

deposition of a redesignated non-testifying expert only under exceptional

circumstances. The purpose underlying Rule 26(b)(4)(A), which permits discovery

11 Fed. R. Evid. 403 provides in part “[E]vidence may be excluded if its probative value is

substantially outweighed by the danger of unfair prejudice [...].”

12 Although some courts have characterized the disclosure of the expert report or deposition

opinion testimony as a type of work product for which confidentiality cannot be restored,

when the rule was originally drafted the advisory committee explicitly rejected that

approach, stating that the concept of privilege or work product does not apply to the

discovery of a consulting expert’s opinion. Fed. R. Civ. P. 26(b)(4) Advisory committee notes

(1970 amendment) (“These new provisions of subdivision (b)(4) repudiate the few decisions

that have held an expert's information privileged simply because of his status as an expert

…. They also reject as ill-considered the decisions which have sought to bring expert

information within the work-product doctrine.”); see also Republic of Ecuador v. For

Issuance of a Subpoena Under 28 U.S.C. Sec. 1782(a), 735 F.3d 1179, 1184-87 (10th Cir.

2013) (discussing work product protection for expert witness materials under Fed. R. Civ. P.

26, including 2010 amendments to rule); Hartford Fire Ins. v. Pure Air on the Lake, Ltd.,

154 F.R.D. 202, 206 n.6 (N.D.Ind. 1993) (privilege or work product does not apply to

discovery of consulting expert’s opinion).

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from a testifying expert witness to facilitate cross-examination of that expert and

elimination of surprise at trial, is simply not implicated when a redesignated expert

will not testify.

Accordingly, where a party identifies an expert as a possible testifying witness

under Rule 26(b)(4)(A), but subsequently redesignates the expert as a non-testifying

or consulting expert under Fed. R. Civ. P. 26(b)(4)(D), the opposing party may

depose that expert only upon a showing of “exceptional circumstances” under Rule

26(b)(4)(D)(ii).

The relevant inquiry, then, since Ms. Harper is a non-testifying expert, is

whether Opposer has established the exceptional circumstances required to justify

her deposition. In its response, Opposer has not made any such showing to support

the request for deposition testimony.

Without the showing, there is no basis for finding that the deposition of Ms.

Harper is necessary and, therefore, there is no reason to disregard Rule 26(b)(4)(D).

In view thereof, Applicant’s motion for protective order is granted, and Opposer is

not entitled to take the deposition of Ms. Harper.13

Proceedings are resumed.14 Dates are reset as follows:

Discovery Closes CLOSED

Plaintiff’s Pretrial Disclosures 9/5/2014

Plaintiff's 30-day Trial Period Ends 10/20/2014

Defendant's Pretrial Disclosures 11/4/2014

13 Of course, the Board has no authority as to whether the district court issues a subpoena,

and as stated in n.5 supra, proceedings relating to the depositions of subpoenaed non-

parties are within the control of the district court. Because Ms. Harper will not be

testifying, her rebuttal expert report and any raw data related thereto will not be

considered at trial. See n.8 supra.

14

As the parties have not stated otherwise, the Board presumes that the parties have

otherwise completed expert discovery.

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Opposition No. 91205110

Defendant's 30-day Trial Period Ends 12/19/2014

Plaintiff's Rebuttal Disclosures Due 1/3/2015

Plaintiff's 15-day Rebuttal Period Ends 2/2/2015

In each instance, a copy of the transcript of testimony, together with copies of

documentary exhibits, must be served on the adverse party within thirty days after

completion of the taking of testimony. Trademark Rule 2.l25.

Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An

oral hearing will be set only upon request filed as provided by Trademark Rule

2.l29.

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